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Volkswagen AG v. Emir Ulu [2005] GENDND 1958 (9 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. Emir Ulu

Case No. D2005-0987

1. The Parties

The Complainant is Volkswagen AG of Germany, represented by HK2 Rechtsanwälte, Germany.

The Respondent is Emir Ulu of Turkey.

2. The Domain Name and Registrar

The disputed domain name <vw-service.com> (the “Domain Name”) is registered with PSI-USA, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2005. On September 15, 2005, and September 20, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 20, 2005, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 23, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2005.

The Center appointed Mr. Tobias Zuberbühler as the sole panelist in this matter on October 26, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is Volkswagen AG, commonly known as VW. The Complainant is one of the world’s leading car manufacturers.

The Complainant owns a number of relevant trademark registrations containing the term “VW” in various jurisdictions. The Complainant submitted evidence of valid trademark registrations in Germany and Turkey. The Complainant or affiliates run various websites under domain names comprising the trademark “VW”.

The Domain Name was registered by the Respondent on May 18, 2004.

The website associated to the Domain Name is linked to “www.domain-welt.com”, where the Domain Name is publicly offered for sale or for rent.

5. Parties’ Contentions

A. Complainant

The Complainant objects to the use of the Domain Name by the Respondent and bases its Complaint on the following grounds:

1. The Domain Name is identical or at least confusingly similar with the trademark “VW” owned by the Complainant. The trademark was registered in several countries.

2. The Respondent has no rights or legitimate interests in respect of the Domain Name:

a) The Respondent misleadingly diverts customers to his website for commercial gain.

b) The Respondent offers the Domain Name for sale publicly and directly to the Complainant.

c) The Respondent has no rights in the trademark “VW”. The Respondent is not commonly known by the trademark “VW”.

d) There are no demonstrable preparations for the use of the Domain Name in connection with a bona fide offering of goods before notice of the dispute. The Respondent does not make a legitimate non-commercial or fair use of the Domain Name.

3. The Domain Name was registered and is used in bad faith.

a) The Respondent intentionally attempts to attract for commercial gain Internet users to the Domain Name by creating a likelihood of confusion with the Complainant’s trademark.

b) The Respondent acquired the Domain Name for the purpose of selling it to the Complainant or its competitors.

The Complainant requests the Panel to order a transfer of the Domain Name from the Respondent to the Complainant.

B. Respondent

The Respondent was duly notified of the administrative proceedings as stipulated under paragraph 2(a) of the Rules, but did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name <www.vw-service.com> combines the trademark “VW” in its entirety with the suffix “service”. The suffix “service” does not render the Domain Name significantly different from the Complainant’s “VW” trademark.

The mark “VW” is known worldwide. The Domain Name is most likely to be associated with the Complainant’s services to its customers by authorized garages. As set forth in WIPO Case No. D2001-0055, America Online, Inc., v. Yeteck Communication, Inc., the mere addition of a word or suffix (i.e. the word “service”) to a well-known trademark does not prevent a confusing similarity between the domain name and the trademark. As the Complainant is already using the domain names <www.wv-service.de> and <www.vwservice.de> for offering a wide range of services to its customers by authorized garages, the addition of the word “service” does even increase the likelihood of confusion among the public.

The Complainant therefore has fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, the following circumstances can demonstrate rights to and legitimate interests of a respondent in a domain name:

(i) before any notice was given to the respondent of the dispute, the respondent used, or demonstrably made preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has not acquired any trademark or service mark rights; or

(iii) The respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant never authorized the Respondent to register the “VW” trademark or any combinations thereof. The Respondent is not a licensee of the Complainant.

The Respondent is not making a legitimate non-commercial or fair use of the Domain Name. In fact, the Respondent offers the Domain Name for sale publicly and directly to the Complainant.

The Respondent has not been previously known under the disputed Domain Name.

For the reasons set forth above, the Respondent has no legitimate interest in respect of the Domain Names in the sense of paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the Domain Name has been used and registered in bad faith if:

(i) circumstances indicating that respondent has registered and has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or

(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product or service on its website or location.

The Respondent has registered a domain name reflecting an internationally well-known trademark (“VW”). The Respondent has no rights to this trademark and must have been aware of it, considering the widespread use and fame of "VW" (See WIPO Case No. D2001-1003, Ferrari S.p.A. v. JK Marketing). The Complainant already operates websites under the domain names <www.vw-service.de> and <www.vwservice.de>. Thus, the choice of the Domain Name cannot be coincidental. The Respondent obviously acquired the Domain Name for the sole purpose of selling it as it is offered for sale to the general public and to the Complainant. The Panel considers this to be indicative of bad faith.

Based on the case file, the Panel concludes that the Respondent has registered and is using the Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

7. Decision

In consideration of the above, the Panel holds that the Domain Name is confusingly similar to the registered mark of the Complainant, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name has been registered and is used in bad faith.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <vw-service.com> be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist

Date: November 9, 2005